Let's Get Ready To Ruuuuuuuuumble... About The Difference Between A Copyright And A Trademark

from the it-ain't-that-tricky dept

It's not uncommon for people unfamiliar with patents, copyrights and trademarks to confuse the three -- and we see it all too often in the press. However, you would think that lawyers would be a bit more careful. Copycense points out a story about how famed boxing announcer Michael Buffer is suing a local radio station for using his trademarked phrase "Let's Get Ready to Rumble" without paying him. The reporter shifts back and forth between copyright and trademark as if they're the same thing:

Buffer alleges XHNZ 107.5 used his copyrighted catch phrase "Let's get ready to rumble" without his permission.

The phrase is everywhere, from boxing to hockey and even video games and auto racing. And if you're using it without permission, you'd better be careful because it's trademarked.

Now, hopefully this is just an innocent mistake by the reporter who assumes (incorrectly) that trademarks and copyrights are the same thing, but even Buffer's own lawyer seems confused about it:

"It could be fairly substantial," [Buffer's El Paso-based attorney Mark] Walker said. "Copyright laws are well-known and it's important for people to know and understand what they are and seek advice if they have any questions about it."

Of course, if they're seeking advice about copyright laws, it shouldn't be over a trademarked phrase. Buffer insists that Walker is "a great lawyer" who "knows exactly what to do," and perhaps that's true, but it seems like he should get the basics of copyright and trademark law straight. Last year, we wrote up a quick explanation of the difference, and the new site Core Copyright, recently had its own, much more detailed explanation on the difference as well.

Copyright...Trademark?

"Don't worry about semantics. The point is you owe me money!"

I work for an electric utility and when the dispatch gets an outage call our outage system alert ring is a recording of Buffer announcing his trademarked phrase repeatedly until someone picks up the line. I am sure the lawyers would have a field day with that one.

Thoughts and Questions

If the radio station pulled a clip from the top of a boxing match or hockey game, it wouldn't be trademark infringement, but rather a copyright violation against the respective sanctioning body/league.

If anyone ever recorded Buffer saying that phrase outside of an official broadcast, couldn't it be released into the public domain and repeated freely forever after?

Even if the original recording was made in violation of something printed on a ticket, it wouldn't legally wrap up the recording itself (as Mike pointed out in the Erin Andrews case). Since trademark doesn't apply to a sound recording (I don't think), Buffer couldn't legally do anything about it, could he?

Sort of makes sense to use both terms

The attorney will probably file for both trademark and copyright, just because it isn't much more expensive, and it forces the defendant to defend a wider front. This problem would largely go away if the plaintiff had to pay up for any obviously bogus claims.

I'd second the possibility that Buffer is looking to claim both copyright and trademark rights in the phrase--the rights are distinct but there's nothing stopping him from trying to claim both sets for the same expression.

Copyright in such a short phrase is a tough sell, though, and on the trademark end, is there really an issue with confusion of the origin of goods or services? Maybe if confused audiences will think all announcers who use the phrase are Buffer. . . ?? (There is a line of cases sort of like that, see Waits v. Frito Lay (9th Cir. 1992), for false endorsement of Frito Lay chips or John W. Carson v. Here's Johnny Portable Toilets (6th Cir. 1983)--a classic, though in that one Johnny lost on the trademark claim but won on a right of publicity claim.)

I'm a total fan of this blog, but the link back to the entry on copyright concerns me--it's actually not true that "copyright infringement only covers copies of an existing work, rather than something similar, but different." The exclusive rights of a copyright owner also include the right to make a "derivative work." The definition of the phrase is complicated, but it goes beyond just making a copy of the copyrighted work.

Re:

Any lawyer who wants to professionally practice "IP" law requires a firm grounding in patent, trademark, copyright, trade secret, unfair competition and related antitrust, both at the state and federal levels (including experience dealing with international counterparts to US law). This is no small task. It takes many years of practice to achieve mastery of these areas.

Drawing an analogy to the medical profession, I wonder how many people would enthusiastically embrace their family doctor performing on them brain surgery?

One reads here and at many other venues about horror stories pertaining to IP, and especially litigation. While certainly there are some well qualified "IP" lawyers who on occasion contribute to these stories, in my experience the vast majority are contributed by those who "dabble" in areas of law for which they are ill prepared. Of course, clients by and large have no way of knowing who is truly qualified and who is not.

And...yes...the phrase in the article is properly characterized as a trademark, at least two registrations for which have been secured from the USPTO.

Re:

Clearly the phrase is used as a trademark, as evidenced in part by federal trademark registrations (and likely also state and foreign registrations).

Copyright would seem to be more problematic, and yet the plaintiff has secured over the years at least two registrations from the Register of Copyrights. Curiously, numerous other parties have been able to likewise copyright the phrase. How this all plays out only time will tell, but I certainly expect a strong challenge to the legitimacy of the two registrations.

Just Arguing Semantics

Re:

It's pretty basic, really. Think of it this way -- it's perfectly OK to use a trademark, so long as you don't use it in a way that might cause people to confuse you with the trademark holder. For instance, I could call my sewer cleaning service "Burger King" without infringing on the trademark held by the restaurant. (I'd get sued anyway, but I'd be legally in the right.)

Copyright prevents you from using the work. Copyright is much more restrictive than trademark.

Re: Just Arguing Semantics

It's not only an issue of semantics when the words carry different meanings and implications. Copyright & trademark refer to different things, have different sets of rules, and are very much different things. So, it's ultimately not just a matter of semantics, but the fundamental differences between completely different areas of law.

Re: Re:

Copyright prevents you from using the work. Copyright is much more restrictive than trademark.
But copyright has a defence of independent invention (unlike patent) so although a short and fairly obvious phrase can be copyrighted the copyright cannot be effectively enforced - since the defendant can always claim that he thought up the phrase himself.

Whatever...

It's damn near impossible to create anything these days with so many claims in copyrights, patents, and trademarks floating about like ocean-bound mines. Fight against it. Make yourself heared by the lawmakers that your demanding change and won't take "no" for an answer.
And if that doesn't work.. Keep those P2P networks singing!!
ARRRRRRRRRRR!! To Davy Jones's Locker with'em!!
;)

In UK

Both copyright and trademark could apply

I am a copyright and trademark lawyer and I thought I would provide some nitpicky context (ignore this post if you are in the 'whatever' camp and are not interested in the details).

Unfortunately it's true that many reporters freely intermix the concepts of "copyright" and "trademark," in the same story and even in the same sentence. (I have caught the Wall Street Journal doing this so they are in good company). Even more unfortunate, the majority of general practice attorneys, and even the majority of corporate and commercial transactions attorneys, have a tendency to throw these terms around and not focus on exactly which rights are being violated. (Tip of the day: do not hire a trademark attorney who says that someone has "trademarked" a phrase. Experienced trademark lawyers do not use "trademark" as a verb.)

Copyright and trademark rights are completely dependent on subject matter and situation. What type of subject matter, and what type of use in what situation, is the basis of the claim? While it was not clear from the linked story exactly what was happening here, there's enough information to say that under a number of likely scenarios the station would be violating one or the other or both.

Let's say the station has one of its announcers record a promotional tag phrase in combination with its call letters: "XHNZ -- LET'S GET READY TO RUMBLE!". Buffer has several federal trademark registrations in a number of variations of this phrase for sporting, entertainment and cultural events and related services and media uses. (His trademark attorneys were admirably thorough: he also owns trademark rights in all variations of this phrase for clothing, mugs, t-shirts, computer software and multimedia, and even personal care products such as shampoo). This hypothetical use is clearly use in entertainment and would be the basis for a very viable claim of federal trademark infringement.

Now let's say that instead of using its own announcer, the radio station does basically the same thing but inserts the words "LET'S GET READY TO RUMBLE" in Buffer's own voice, taken from a sound clip of a recording of an actual event. The recording is copyrightable as a sound recording and use of a portion of a sound recording usually constitutes copyright infringement. (In that "usually," I am condensing a lot of finer points of law such as how much digital sampling constitutes infringement, and whether there are fair use defenses due to a relatively small amount of the whole work being used, and whether Buffer owns the recording). Let's just say that as an experienced IP attorney, I am positive that if a recording of Buffer's voice were used like this, there is no judge that would throw the lawsuit out on a motion to dismiss, and it would therefore go forward to a very expensive trial. Under copyright law, if you have a registration in advance of an infringing use and you win a court case, the other side pays your attorney's fees, as well as a pre-set amount of damages, regardless of the actual monetary harm. The same is not true for trademark claims: you pay your own lawyers no matter what. So, if you can possibly claim copyright infringement, that's what you do, because the other side could very well have to pay your attorneys' fees of $50,000 to $250,000 (high end but typical). This is the kind of ten-ton leverage that makes the RIAA so successful in forcing its victims to settle. RIAA has very, very expensive lawyers.

There is also the question of a claim of copyright in just the phrase "Let's get ready to rumble" (i.e., as a 'literary work'). As the article and one commenter pointed out, slogans and short phrases standing alone, typically are not copyrightable subject matter, because they are too short to constitute an 'original work' (once again, condensing a lot of finer points of law explaining why this is the case).

And there's yet a third way that Buffer's intellectual property rights could be violated: if the radio station used an announcer's voice to sound as much like Buffer as possible, and thereby impersonate him, without using an actual recording of him. This violates another set of common law rights which are not strictly trademark rights. The law in most states provides a right of publicity which protects a celebrity's image and persona against commercial use by another party. There are several famous cases protecting a celebrity's 'persona' against a soundalike (i.e., you can't use a really good impersonator to give the impression that Arnold Schwarzenegger endorses your dog food). On the federal level, doing this type of thing would also be a violation of federal trademark law for something called "false association" or "passing off."

Net net, if you throw a bunch of miscellaneous vague copyright and trademark allegations against the wall, something's gonna stick.

Re: Both copyright and trademark could apply

Aha. Great post...

I hadn't even considered that they might be using a recording of him, which could result in the copyright claim. Though, if the recording came from a boxing match, might it be the case that the copyright was owned by the producers of that match?

Re: Re: Both copyright and trademark could apply

I said that in the second comment! Of course, I am not a lawyer.

Carol Shepherd, your post is great. If you come back, I'd really appreciate your opinion on the scenario I brought up where someone made a recording of Buffer in person and released it into the public domain.

You make an excellent point about confusion with Buffer's own "endorsement" of a product, but that wouldn't provide any protection against a DJ using the public domain sample as a hook for a song or live set, would it? A good attorney might try and argue the "brand confusion" angle still, but I don't think anybody really assumes that George W. Bush sung "Sunday Bloody Sunday" because someone chopped up his speeches to make the vocal.

Re: Both copyright and trademark could apply

Before commenting above I searched the Register of Copyrights database and noted two registrations, one of which was for a sound recording. I do not immediately recall the classification of the second.

Yes, I too have substantial questions concerning the ability of the phrase to meet the requirements of Title 17. Hence, it seems quite clear that any assertion of infringement would be subject to intense scrutiny as to the registrations.

Copyright and trademark

A phrase can be both copyrighted and trademarked. While the penalties and legal implications generally are different, there is nothing wrong with referring to both in one conversation, even though they are referring to the same object.

Yes, the two are different, but you are assuming they are mutually exclusive - they are not.

If you are at all a fan of the "sweet science" of boxing, then you are no doubt aware of Michael Buffer and his copyrighted / trademarked / signature phrase. While it might seem a little dumb taken without context, with context it is an amazing piece of work.

Michael Buffer has built a career by being the voice of almost exclusively high end, top notch, championship boxing events. To a boxing fan, his presence as the ring announcer lends credence to the product being presented, signifies importance, and generally adds a certain value to the event.

In a sense, he is to boxing what Don LaFontaine was to movie trailers. Those three words "In a world..." could take your average movie trailer and move it up a notch. He didn't copyright or trademark the phrase, but anyone else using it in a movie trailer would be but a poor imitation (RIP sir!).

Having Michael Buffer, as the main event is being announced say his magic phrase is enough to set the house on fire, get the fans on their feet, and build up the tension leading up to a championship match. I can understand the value, and I can understand why he would be granted both a trademark and a copyright (especially on voice recordings).

As for the question of work for hire, I would have to say that Michael Buffer is a performer like any other artists, and while you can hire him as an artist, he isn't going to give you too many rights over his phrase, except in reruns, and even then, I am sure he gets a royality every time the words are played somewhere.